La Irlandesa 1943 mark: misleading and filed in bad faith?
La irlandesa 1943 - does anyone think of a product from Ireland? Not only this question, but also a business relationship with an Irish company that had ended after decades was the focus of trade mark proceedings before the European Court of Justice - because the disputed trade mark was applied for as an EU figurative trade mark after the end of the business relationship.
The applicant, Hijos de Moisés Rodríguez González, SA (Spain), had been buying Irish butter from Ornua Co-operative Ltd (Ireland) for decades and selling it in the Canary Islands (Spain) under trade marks containing the element 'ela irlandesa'.
After that business relationship ended in 2011, the applicant continued to sell goods under those marks and finally, in 2013, applied to the EUIPO for registration of the EU figurative mark ‘La Irlandesa 1943’ for various foodstuffs. Following the publication of this EU trade mark, Ornua Co-operative Ltd brought an action against this trade mark registration, alleging, inter alia, that it misled consumers.
In December 2017, the Presidium of the Boards of Appeal referred the case even to the Enlarged Board of Appeal of EUIPO. The latter found in March 2020 that the disputed mark 'La Irlandesa 1943’ was misleading and moreover, that it had been applied for in bad faith (2 March 2020 (Case R 1499/2016-G)).
The Spanish trade mark applicant challenged this decision before the European Court (CFI), claiming that the trade mark in dispute had been wrongly declared invalid as misleading and applied for in bad faith.
In this regard, the CFI first held that both aspects must be reviewed by the court. And, this could only lead to the annulment of the contested decision if both pillars of the contested decision were found to be unlawful. So how did the CFI decide: is the La Irlandesa 1943: trade mark misleading and also in bad faith?
La Irlandesa 1943 trade mark - misleading?
The CFIstated that the Enlarged Board of Appeal had rightly found that the disputed mark evokes Ireland, as evidenced by both the dominant word element ‘la irlandesa’ and the typical green. Spanish-speaking consumers would make an immediate connection with the (supposed) geographical origin, in this case Ireland. The applicant could also not claim that the mark in dispute had acquired distinctive character through use, because distinctive character acquired through use is not applicable to marks which are considered to be misleading.
The action against the declaration of invalidity of the trade mark in dispute was nevertheless upheld by the CFI. This is because the examination of an application for a declaration of invalidity based on the misleading nature of the mark must be based on evidence relevant to the date of application for registration of the disputed mark, here this was August 6, 2013. This is different in revocation proceedings against a mark, in which the use of that mark is taken into account.
Here, however, the proceedings were invalidity proceedings. The Enlarged Board should therefore have examined whether, on the filing date, there was a conflict between the information conveyed by the contested mark and the characteristics of the goods designated in the application. But, as the list of goods did not contain any reference to the geographical origin of the goods and could therefore also include goods originating from Ireland, such an opposition did not exist at the time of filing, the CFI held. Therefore, it could not be established that the contested mark was misleading at that time.
Therefore, the CFI upheld the first plea. The contested decision of the Enlarged Board of Appeal of EUIPO was wrong to find that the mark was misleading, according to CFI.
La Irlandesa 1943 brand - Bad faith?
In the bad faith decision, the Grand Board had also relied on evidence beyond the filing date –and also on the use of that mark. This was rightly done, the CFI said.
Since the marks containing the element ‘la irlandesa’ - like the contested mark - were linked to the business relationship with the Irish company, the end of that business relationship is a relevant factor in assessing the applicant's intention in applying for the contested mark, the CFI ruled. The applicant continued to use the disputed mark after the end of that relationship for goods that did not originate in Ireland, while the Irish origin of the goods was an essential aspect of that relationship and of the original use of the mark.
However, a not insignificant part of the goods sold by the applicant under the contested mark were not of Irish origin and therefore did not correspond to the perception of those goods by (Spanish) consumers. While this circumstance is irrelevant for the examination of whether the mark is misleading, it is not relevant for the examination of bad faith.
Moreover, the Grand Board was able to rely on evidence adduced which, in particular, made it possible to establish a chronology of the events which were characteristic of the application for registration of the contested mark. The applicant did not provide any legitimate commercial logic to explain the filing of the contested mark, nor the commercial logic of its use after the end of the business relationship with the intervener in 2011.
Moreover, the Enlarged Board of Appeal had referred to other similar cases, including a decision of the Cancellation Division of the EUIPO of 25 September 2002, in which a trade mark containing the element 'la irlandesa' had been declared invalid - with reference to the association with Ireland. Although decisions of the EUIPO cannot bind the European Court of Justice, they can give an indication of an unauthorised trade mark application.
That was the case here. That the use of the contested mark was disputed because of its potentially misleading nature in relation to Ireland was a fact, the CFI ruled, which was necessarily known to the applicant on the date of the application for that mark.
The CFI confirmed that the disputed mark had been applied for in bad faith. And because this finding alone is capable of justifying the Grand Board's decision, the Spanish trade mark applicant's claim was dismissed in its entirety (29 June 2022, T:2022:404).
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